ADMINISTRATIVE PANEL DECISION

Wirecard AG v. Telepathy Inc., Development Services

Case No. D2015-0703

1. The Parties

The Respondent is Telepathy Inc., Development Services of Washington, D.C., United States of America, internally represented.

2. The Domain Name and Registrar

The disputed domain name <boon.com> is registered with Name.com LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 17, 2015. On April 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2015. The Response was filed with the Center on May 11, 2015.

The Complainant requested that the dispute be decided by a single-member Panel. Exercising its right under the Rules, paragraphs 4(b)(iv) and (v), the Respondent requested a three-member Panel. In accordance with the Supplemental Rules, paragraph 8, the Center appointed Adam Taylor, Torsten Bettinger and Tony Willoughby as panelists in this matter on June 9, 2015.

The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, which was incorporated in Germany on May 6, 1999, is a provider of payment systems with related services. The Complainant is listed on the German stock exchange. Its turnover in 2013 was some EUR 482 million.

The Complainant owns Community Trade Mark No. 012795464 for BOON filed April 15, 2014, and registered on December 16, 2014, in classes 9, 35, 36, 38, 41, 42 and 45.

The disputed domain name was registered on October 14, 1998.

On February 27, 2015, the Complainant offered to buy the disputed domain name for USD 500 via a website at "www.securedoffers.com". In order to make this offer, the Complainant was required to pay USD 19 and to declare that it has no legal claim to the disputed domain name. The Respondent replied to the offer by email the same day saying that it had received many offers for the disputed domain name including one for USD 75,000. The Respondent added that short, brandable dot-com domains with positive meanings were very rare and that it valued the disputed domain name "in the six figures".

5. Parties' Contentions

A. Complainant

A summary of the Complainant's contentions is as follows:

The disputed domain name is identical to the Complainant's registered trade mark. The use of the disputed domain name is likely to cause confusion because Internet users will erroneously believe that it is owned by the Complainant.

The Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent is not known to the Complainant. The Complainant sees no legitimate reason as to why the Respondent should have the right to choose the Complainant's brand "boon" as a domain name.

The Respondent has not been commonly known by the disputed domain name, nor has it used "boon" in any marketing materials.

The Respondent's offer to sell the disputed domain name for USD 75,000-100,000 shows that the Respondent's only intention was to fraudulently transfer the disputed domain name to the highest bidder. The Respondent thus has no legitimate interest in the disputed domain name.

As the Respondent has not used the disputed domain name, so far as the Complainant is aware, the Respondent is thereby proven merely to have a financial interest in the disputed domain name. The Respondent owns approximately 10,000 other domain names. It is evident that the Respondent is a professional "domain grabber" who has only registered the disputed domain name in bad faith to sell the highest bidder. This is substantiated by the requirement for the Complainant to pay USD 19 to contact the Respondent.

Although there is no website at the disputed domain name, the possibility cannot be excluded that the Respondent is using the disputed domain name for email. It could therefore mislead email recipients by giving the impression that the email originated from the Complainant.

B. Respondent

A summary of the Respondent's contentions is as follows:

The Respondent registered the disputed domain name as part of its investment strategy of acquiring meaningful and short dot-com domains that would serve well as online addresses. The Respondent selected the disputed domain name because it was a common word with positive connotations meaning "a thing that is helpful or beneficial".

The disputed domain name was registered by the Respondent fifteen years prior to the Complainant conceiving an interest in the related mark. The disputed domain name has never been used to target the Complainant. These facts, which are uncontested by the Complainant and, indeed, are acknowledged in the Complaint, are fatal to the Complaint.

The website for the service at "www.boonpayment.com" comprises a holding page which states: "boon. Coming up! Launch August 2015".

The Complainant undertook this case not because it is a victim of cybersquatting but because it covets the disputed domain name for its newly announced service.

The Complainant cannot show that it has used the BOON mark in commerce or that it had enforceable rights in the mark prior to registration of the disputed domain name.

The Complainant cannot make a prima facie case that the Respondent lacks a right or legitimate interest as the Complainant's rights post-date registration of the disputed domain name. Rather, the Complainant's attempt to acquire the disputed domain name demonstrates the Respondent's legitimate interest in the disputed domain name.

Buying and selling domain names is a legitimate interest provided there is no evidence that a trade mark was targeted by the Respondent.

The Complainant provides no evidence of registration or use of the disputed domain name in bad faith.

The Respondent did not choose, and could not have chosen, to register the Complainant's brand as a domain name in 1998, sixteen years prior to the launch of this brand.

The Respondent has the right to register and sell a domain name which was registered based on its generic meaning.

There is nothing "fraudulent" in responding to a commercial enquiry for purchase of a domain name.

The Respondent has received numerous unsolicited inquiries and offer from third parties desiring to purchase the disputed domain name, including an offer for USD 75,000.

The Complaint constitutes Reverse Domain Name Hijacking. The Complainant knew or ought to have known that its case was fatally weak and that it could not prove the essential elements required by the UDRP. The Complainant should have been dissuaded from filing a Complaint which so lacked the requisite evidence. The Complainant has chosen to ignore the facts by advancing fanciful and speculative arguments. This is a cynical effort to use the Policy as "Plan B" to seize a valuable domain name.

A finding of Reverse Domain Name Hijacking is further warranted where the Complainant expressly made a false representation to the Respondent that it had no legal claim to the disputed domain name when submitting its anonymous offer to purchase. The Complainant used an offer falsely masquerading as a legitimate commercial inquiry to manufacture "evidence" for this dispute.

Where a complainant is represented by able intellectual property counsel who, even on a rudimentary examination of the Policy and its application in this area should have appreciated that the complaint could not succeed, Reverse Domain Name Hijacking may be found.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has rights in the mark BOON by virtue of its registered trade mark for that term. Disregarding the domain name suffix, the disputed domain name is identical to the Complainant's trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel does not propose to consider this factor given the Panel's conclusion as to bad faith below.

C. Registered and Used in Bad Faith

"Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date […], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right."

While there have been cases where bad faith has been found when the registration took place prior to the acquisition of trade mark rights, such cases involve situations where, at the time of registration, the respondent was likely to be aware of the complainant and it was sufficiently clear that the aim of the registration was an attempt to take advantage of the confusion between the domain name and any potential complainant's rights. This is not such a case.

The Complainant itself states that the disputed domain name was registered on October 4, 1998 (while the publicly available WhoIs record appears to indicate the registration date of October 14, 1998), and that the Complainant was founded in 1999, i.e., after registration of the disputed domain name. The Complainant does not even claim that it, or a predecessor, has ever actually used the mark BOON; indeed, a website holding page produced by the Respondent suggests that "boon" is the name for an intended product of the Complainant, not yet launched. On the record before the Panel, the first conceivable date on which the Complainant could have acquired relevant trade mark rights was April 15, 2014, the date when it filed its trade application - some 16 years after registration of the disputed domain name.

Therefore, the disputed domain name could not have been registered in bad faith and the Complaint clearly fails.

It is unnecessary to consider in any detail the Complainant's arguments relating to the Respondent's offer to sell the disputed domain name to the Complainant. Suffice it to say that, even if the disputed domain name had post-dated the Complainant's trade mark, this contention would have failed. In the absence of any evidence from the Complainant that the Respondent had registered the disputed domain name with reference to the Complainant, the Respondent was fully entitled to respond to the unsolicited approach from the Complainant by asking whatever price it wanted for the disputed domain name and, indeed, to require offerors for the disputed domain name to pay a fee to register their interest if the Respondent considered that to be commercially appropriate. The Panel sees nothing remotely "fraudulent" in such behaviour.

The Panel therefore finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.

D. Reverse Domain Name Hijacking ("RDNH")

"Paragraph 15(e) of the UDRP Rules provides that, if 'after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding'. Reverse Domain Name Hijacking is defined under the UDRP Rules as 'using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name'

[…]

WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP […] or […] misled the panel; a respondent's use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith […]."

The Panel concludes that the Complainant's actions constitute RDNH for the following reasons:

(1) The Complainant, which is represented by counsel and which cited a number of UDRP cases in its Complaint, must be taken to have at least known of the fundamental importance of establishing awareness of the Complainant's rights as at the date of registration of the disputed domain name and that it could not come close to establishing that requirement given the 16-year gap between registration of disputed domain name and acquisition of trade mark rights.

(2) The Complainant has based its case on an argument to the effect that registering a (generic) domain name but not using it and instead offering it for sale to the highest bidder, independently of any awareness of the Complainant, was of itself somehow "fraudulent" and evidence of bad faith. The Panel thinks it unlikely that the Complainant seriously contemplated that it could succeed with such an argument.

(3) The Complainant referred to its alleged extensive trading activity and turnover but omitted to mention that none of this related to "boon", the trade mark at issue in this case and that the Complainant's apparent venture relating to that trade mark had not yet even been launched. The Complainant should have been open about this fact.

Finally, the Panel would add that one factor which the Panel has not taken into account when assessing RDNH is the falsity of the representation that the Complainant had no legal claim to the domain name, which the Complainant was forced to make when submitting its offer for the disputed domain name. In the Panel's view this "click wrap" scenario is insufficient to constitute some form of waiver of its rights and, in any event, requiring offerors to agree to such statements discourages efforts to resolve disputes by informal purchase.

7. Decision

For the foregoing reasons, the Complaint is denied. The Panel further declares that the Complaint was brought in bad faith and that it constitutes an abuse of the administrative proceeding.